CAPRIHANS INDIA PRIVATE LTD Vs. FORMICA INTERNATION LTD

JUDGEMENT

(1.) THIS is an application for stay of all proceedings in Suit No. 1283 of 1964, pending the hearing and final disposal of an application to the Registrar of Trade Marks at the Calcutta Office of the Trade Marks Registry. The respondent No. 1 which is the plaintiff in the said suit has instituted the suit against the petitioner and other defendants praying for perpetual injunction restraining the defendants from infringing the plaintiff's registered trade mark consisting of the word "formica" and from passing off goods which are not the plaintiff's goods as and for the plaintiff's goods and for other reliefs. The petitioner manufactures and sells goods by or under the mark "sunmica" the plaintiff's mark has been registered in Class 19 in respect of nonmetallic laminated material for use in building and construction. The said suit being Suit No. 1283 of 1964 was instituted on the 13th July, 1964. Prior to the institution of the suit the petitioner on the 14th June, 1963, filed in the office of the Trade Mark Registry at Calcutta an application for the rectification of the register of trade marks by the removal of the plaintiff's registered trade mark, and the proceedings therein are still pending. The petitioner has asked for rectification on the ground that the plaintiff's mark was registered in contravention of the provisions of section 11 of the Trade and Merchandise Marks Act, 1958. The petitioner's contention in the said application is that the mark "formica" is a compound of two ordinary English words "for" and "mica" and conveys the idea that the goods on or in relation to which it is used are a substitute for mica which is a mineral found in nature; the products on or in relation to which the mark is used, neither is nor can be a substitute for mica ; the mark, therefore, is likely to deceive or cause confusion or would be contrary to the law of Trade Marks for the time being in force. The petitioner pleads that the registration of the plaintiff's mark is invalid, and under Section 111, sub-section (1) (i) of the Trade and Merchandise Marks Act, 1958, the Suit is liable to be stayed until the final disposal of the petitioner's application for rectification. It is necessary, at the outset, to set out the relevant provisions of Section 111 of the Trade and Merchandise Marks Ac;), 1958.

(2.) THESE provisions are as follows:-

(3.) THE first contention of Mr. Sankar Banerji, learned counsel for the respondent is that this application is premature. It is urged that only "the Court trying the suit" shall stay the suit pending the final disposal of the proceedings before the Registrar. In other words, a suit cannot be stayed on an interlocutory application under section 111 of the Trade and Merchandise Marks Act, 1958. I am unable to accept this contention. The Section says that where in a suit for the infringement of a trade mark the defendant pleads that the registration of the plaintiff's trade mark is invalid ; the Court trying the suit shall stay the suit if any proceedings for rectification of the register are pending. Now, Order 6, Rule 1 of the Code of Civil Procedure defines "pleadings". It means a plaint or written statement; but the word "pleads" has not been defined in this rule. In section 111 unless the word "pleads" means "pleads" in any document the defendant has to wait till his written statement has been filed; discovery and inspection are completed ; and the actual trial of the suit begins. The section seeks to prevent parallel enquiries in the same matter and as such in my view the word "pleads" in the Section should be given the meaning which I have suggested. In other words, if the defendant even before the filing of the written statement and before the trial "pleads" in any petition or affidavit that the registration of the plaintiff's trade mark is invalid he would be entitled to ask for a stay of the suit provided that the other conditions specified in the section are satisfied. The dictionary meaning of the word "plead" is "address Court as Advocate or party, maintain (cause) in Court; allege as plea or excuse, give as answer to charge, make earnest appeal or entreaty". In Chapter VII, Rule 8 of the Original Side Rules of this Court which deals with verification by a person other than the party pleading it is, inter alia, stated: